(BRPTO’s gazette of June 22, 2021)

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On May 12, 2021, the Supreme Court Justices, by majority, declared the Sole Paragraph of Article 40 of the Brazilian IP Statute unconstitutional with ex nunc effects.  This means that all utility patents granted with a 10-year term of protection from grant and all utility model patents granted with a 7-year term of protection before the publication of the final hearing minutes will remain valid, with two exceptions, for which retroactive effects will be applied (ex tunc):

• Patents with pending invalidity lawsuits grounded on the unconstitutionality of the Sole Paragraph of Article 40 and lodged until April 7, 2021; and
• Patents granted under the now unconstitutional Sole Paragraph covering pharmaceutical products and processes and equipment and materials “for use in healthcare”.

On May 18, 2021, the BRPTO provided a first list of patents officially affected by the Supreme Court decision (ADI #5529) in an official communication published inOfficial Gazette #2628. The list contained 3,341 pharma-related patents, which complied with Art. 229-C of the Brazilian IP Statute. On June 1, 2021, the BRPTO provided a second list of patents officially affected by the Supreme Court decision (ADI #5529) in an official communication published in Official Gazette #2630. Said list contained 2,114 patents related to medical technologies, according to the WIPO. The patents mentioned in both first and second lists will have their term of protection reduced or will be declared expired.

The BRPTO has now provided a third list of patents officially affected by the Supreme Court decision (ADI #5529) in its Official Gazette #2633 from June 22, 2021. Said list contains 97 patents having at least one of the following IPCs A61K/6, C12Q/1, G01N/33 and G16H, which will also have their term of protection reduced or will be declared expired, if applicable.

In this latest official communication, the BRPTO highlights that after publication of the term of protection correction (under code #16.3) the patentee has a 60-day term to file a brief containing arguments and a request for the BRPTO to revise its act. If the arguments are accepted by the BRPTO, the term of protection will be restored to the original term of protection, established by the Sole Paragraph of Article 40 of the Brazilian IP Statute.

Additional lists of patents affected by the Supreme Court’s decision shall be provided in the forthcoming BRPTO Gazettes.

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You can download a copy of the BRPTO’s original communication here. For additional information, please contact info@lickslegal.com.

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